Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86635079 DYNACUT(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86635079/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Our client would like to submit the following proposed description in Class 7, "mining equipment, namely parts and accessories for hard rock continuous miners that use oscillating disc technology, namely, oscillating discs and assembly parts."

 

By way of explanation, the Examiner is advised that the products to be sold under “DYNACUT” are still being developed. The oscillating discs (which are cutting discs) being developed would represent a substantial improvement in the way to cut through hard rock when conducting mining operations.

 

It is not clear whether the products will be sold as replacement parts to update cutting technology on existing hard rock miners or whether the oscillating discs will also be sold as an optional component of hard rock miners.

 

If sold as a replacement part or as an upgrade kit to be added to standard hard rock continuous miners, the oscillating disc will likely have assembly parts used to affix the disc to the mining machine. We do not yet know whether the assembly parts may possibly be sold separately or only as part of a kit with the disc.

 

If the Examiner has any further questions or suggestions, please contact us via telephone.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for parts and accessories for hard rock continuous miners that use oscillating disc technology
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: parts and accessories for hard rock continuous miners that use oscillating disc technology; mining equipment, namely parts and accessories for hard rock continuous miners that use oscillating disc technology, namely, oscillating discs and assembly partsClass 007 for mining equipment, namely parts and accessories for hard rock continuous miners that use oscillating disc technology, namely, oscillating discs and assembly parts
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Mark J. Liss/     Date: 02/29/2016
Signatory's Name: Mark J. Liss
Signatory's Position: Attorney of record, IL bar member

Signatory's Phone Number: 312-616-5600

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86635079
Internet Transmission Date: Mon Feb 29 11:40:14 EST 2016
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2016022911401479
3049-86635079-550fe88e876788bd7823f184da
8995d596478675c5b5874aaef085e1db8c4c-N/A
-N/A-20160229102530372316